The PatLit weblog covers patent litigation law, practice and strategy, as well as other forms of patent dispute resolution. If you love -- or hate -- patent litigation, this is your blog. You can contact PatLit by emailing Michael here

Wednesday, 11 May 2016

The preparatory committee has now published the first job openings at the Unified Patent court.

The recruitment of legally qualified and of technically qualified judges of the Unified Patent Court (Court of First Instance and Court of Appeal) has been launched with the publication of the vacancy notices in English, French, and German. The deadline for applications is 4 July 2016.

The finalization of the appointment procedure is dependent on the entry into force of the Protocol on Provisional Application and subsequently the Agreement on the Unified Patent Court.

The selection process of candidates for judicial posts at the UPC consists of the following
steps:

1. A first round of candidates’ selection will be carried out on the basis of answers provided in
the Application Form, together with the candidates’ Curriculum Vitae, references and any
other relevant document provided.

2. The candidates selected by the Advisory Committee on the basis of this first round of the
selection process will be invited to an interview, carried out by members of the Advisory
Committee. The interview will aim at evaluating skills necessary for judicial functions at the
UPC, such as judicial ethics, experience in meeting tight deadlines, oral communication skills,
the capacity to work in a multinational and multilingual environment, etc.

3. Following the first round of selection and the interviews, the Advisory Committee will
present a list to the Administrative Committee, recommending the most suitable candidates
for posts of judges at the UPC.

4. Based on this list, the Administrative Committee will appoint the necessary number of
judges for a proper functioning of the UPC. When appointing judges, the Administrative
Committee will ensure the best legal and technical expertise and a balanced composition of
the UPC, on as broad a geographical basis as possible among nationals of the Contracting
Member States.

This blogger is pleased to note that the "skills" filter (Steps 2 and 3) is applied prior to considering the criterion of a "broad geographical basis", which enters the game only in step 4. This avoids that unexperienced judges can be favoured over more experienced ones for mere political reasons.

A recent IPKat post pointing out that an independent body for enforcing the code of conduct of future representatives before the UPC is lacking, resulting in a potential violation of Art. 6 ECHR, and the ongoing discussion on disciplinary measures of the EPO BoA made me thinking: How could a hypothetical code of conduct of UPC judges be enforced?

The structure of the code of conduct for the judges will most likely have some similarity to the code of conduct of the ECJ judges, where The President of the Court of Justice, assisted by a Consultative Committee composed of the three Members of the Court of Justice who have been longest in office, shall be responsible for ensuring the proper application of this Code of Conduct. Is this a good solution? Or should the decisions of the president be open to judicial review (e.g. by the ECJ?)

Tuesday, 10 May 2016

In the appeal underlying the decision T 1673/11 (Treatment of Pompe's disease/GENZYME) of 20.10.2015, the patent had been granted with a Swiss-type claim to a process of manufacture of a pharmaceutical product. The patentee wanted to change the claim category from a claim under the provisions of the EPC 1973 invoking the legal fiction according to G 5/83 to a claim under the provisions of Article 54(5) EPC 2000, i.e. to purpose-limited product claim and the question arose whether this extends the scope of protection.

Though the products covered by the claims may be identical from a pharmaceutical point of view, the difference lies in the packaging and information leaflet:

8. The respondent disagreed with the approach taken in decision T 1780/12 in as far as it was based on a comparison of the claim categories and the principle that a process claim was inherently narrower than a product claim. In the respondent's opinion, such an approach did not take into account the extension of protection by virtue of Article 64(2) EPC and the delimitation of the subject-matter claimed by the technical features. A purpose-limited process claim in the format of a Swiss-type claim was directed to a process of manufacture of a product. According to Article 64(2) EPC the protection conferred by such a process extended to the products directly obtained. Because the manufacturing process in a Swiss-type claim was not limited by any technical feature, the manufacture could not be limiting on the product obtained by it. The medical use as limiting feature was the same whether the claim was drafted in the format of a Swiss-type claim or as a purpose-limited product claim in accordance with Article 54(5) EPC. As a consequence, the protection conferred by both types of claims was the same.

9. The board does not agree. First, the comparison of the the protection conferred by the categories of claims in the patent before amendment with the protection conferred by the new category of claims introduced by amendment is in line with the test set out in decision G 2/88 (see point 5 above). Second, the protection conferred by a Swiss-type claim in accordance with decision G 5/83 and a purpose-limited product claim in accordance with Article 54(5) EPC is not the same even if, for the sake of argument, it is accepted that Article 64(2) EPC is to be taken into account when assessing the extent of protection conferred by a Swiss-type claim (see decision T 1635/09 of 27 October 2010, point 14.2).

9.1 Claim 1 as granted is directed to the use of human acid alpha glucosidase in the 100 to 110 kD form in the manufacture of a medicament for the treatment of infantile Pompe's disease. Inasmuch as this use may be regarded as a manufacturing process, the claim would, pursuant to Article 64(2) EPC, confer protection on the product directly obtained thereby. The board judges that the product directly obtained is the manufactured medicament which contains as an active substance human acid alpha glucosidase in the 100 to 110 kD form and which is packaged and/or provided with instructions for use in the treatment of infantile Pompe's disease. Indeed, in a Swiss-type claim, the medicament is characterised by the functional feature of the specified therapeutic application. Contrary to the respondent's opinion, this implies limitations to the product directly obtained, although the manufacturing steps are characterised by the use of a defined compound only.

9.2 Claim 1 of the main request being drafted as a purpose-limited product claim, on the other hand, confers protection on the human acid alpha glucosidase in the 100 to 110 kD form, whenever it is being used for the treatment of infantile Pompe's disease. Since the claim does not refer to a step of manufacture of a medicament, the product claimed, i.e. the human acid alpha glucosidase in the 100 to 110 kD form, is not limited to a manufactured medicament, packaged and/or with instructions for use in the treatment of infantile Pompe's disease.

9.3 It follows from the above that even if, by virtue of Article 64(2) EPC, the protection conferred by granted claim 1 extended to the product directly obtained by the manufacturing process referred to in said claim, the protection conferred by claim 1 of the main request is broader.

9.4 Nor can the board follow the appellant's argument that since the use limitation of the claims of the main request and of the granted claims was the same, their scope of protection was identical.
The board takes the position that, for example, a medicament containing human acid alpha glucosidase in the 100 to 110 kD form packaged and provided with instructions for the use in a treatment other than that of infantile Pompe's disease is encompassed by the scope of claim 1 of the main request when said medicament is being used for the treatment of infantile Pompe's disease. The protection conferred by granted claim 1 does not encompass such use.

9.5 Consequently, claim 1 of the main request would amend the contested patent in such a way as to extend the protection it confers, contrary to Article 123(3) EPC.

Monday, 9 May 2016

The development if the Unitary Patent and the Unified patent court has always been accompanied by the popular narrative of reduced costs and benefit for SME's. Bjorn Ingve Stjerna has now critically tested the promises and political expectations against the reality which is now emerging and compiled his results in an article which is available for download here on his website, which further provides an impressing resource on background documents on the legislative history.

He comes to the conclusion that the alleged support of SMEs by the “unitary patent system” was nothing more than mere lip service in order to maneuver the “patent package” through the legislative proceedings as smoothly and quickly as possible.

Though this result may not come as a surprise given that the system remains essentially unchanged besides or replacing state-subsidized national courts are replaced with the supposedly self-supporting UPC, this article is a fascinating analysis showing how narratives and factoids or half-truths are capable of catalyzing political processes.

Wednesday, 4 May 2016

PatLit is pleased to have received a guest post by Chartered and European patent attorney Kirwin Lee. Kirwin discusses a very interesting character in the UK patent litigation: The "Scientific Adviser", who is a sort of private teacher which may be hired by the Judge and not to be confused with court-appointed experts. Here are Kirwin's thoughts on this issue:

Although English courts have had the power to call in the aid of scientific advisers (or “assessors”) since 1883, most of our readers are probably aware that this power is scarcely exploited. The disinclination of judges to call upon expert assistance at trial may be due to the technical rating system operated by English patent courts - where cases are categorised by technical complexity before trial so as to ensure that they are allocated appropriately to judges. An inadvertent result of this is that when the court does decide to appoint a scientific adviser in a case, you are almost certainly guaranteed the decision would be an interesting read.

Recently Mr Justice Birss handed down the decision in the case Electromagnetic Geoservices ASA v Petroleum Services and Ors [2016] EWHC 881 (Pat). The trial lasted for 11 days in the Patents Court, which was considered lengthy for one patent. However, as the proceedings were settled shortly before judgement, the decision was relatively brief (only two pages long) and included mainly Birss J’s deliberation on the advantages of appointing a court scientific adviser.

To provide a bit of background, the case concerned a dispute relating to the complex technology of marine CSEM (Controlled Source Electromagnetic) and was rated Category 5, i.e. most technically complex. Although Birss J himself has a technical background and is a Category 4/5 patent judge, it was ordered in an earlier interim decision ([2016] EWHC 27 (Pat)) that a neutral scientific adviser was to be appointed following a proposal by the defendant PGS.

Birss J indicated that the private teach-in session with the appointed expert Dr. Karen Weitemeyer, in which he was able to ask candid questions in the absence of the parties, allowed the speeches and cross-examination to proceed more briskly than would have been otherwise. This significantly improved the Court’s comprehension of the key issues and therefore saved time and cost. Birss J also explained that such “further step” was useful and proportionate in facilitating the understanding of the Court of not only the experts’ opinions but also the material on which those opinions are based and the reasons for them. As also noted in the decision, “what matters is not the opinions the experts' express as to the conclusions to be reached but the reasons they give for them”.

It is worth noting that the claimant/patentee EMGS had previously argued against the appointment of a scientific adviser on the grounds that the case was within the ability of Category 4/5 judge. EMGS also had concerns that a lack of transparency of the information being received by the Court would lead to the inability of the parties to challenge or address any views imparted to the judge by the appointed expert. Perhaps in a bid to address these concerns, the Court decided to settle in advance the set of instructions provided to the expert, the instructions explaining the identified topics to be covered. In addition, written materials of the teach-in were provided to the parties afterwards, such that they could comment on the materials at trial.

The particular problem relating to the perceived lack of transparency and the potential influence of an adviser on judges’ views was recognised in Halliburton v Smith [2006] EWCA Civ 1599. The appointed expert of the case Professor David Limebeer sent an e-mail message to the members of the Court in attempt “to highlight the key engineering issues in dispute and to propose a possible way forward”. This e-mail prompted the appellent Halliburton to seek removal of the professor as the scientific adviser, on the account that he had allegedly expressed opinions which were not within the remit of his role in the case.

The Court of Appeal disagreed and refused to revoke the appointment. In the judgment by Lord Justice Chadwick it was pointed out that it would be inevitable that there will be matters in complex technical fields upon which it will be impossible for a skilled and experienced scientific adviser to avoid expressing an opinion. The need for fairness was discussed comprehensively in the decision, where Chadwick LJ commented that the fairness requirement was met since the opinions expressed in the professor’s email was disclosed and the parties were given the opportunity to comment as they see fit. Lord Justice Chadwick also clarified the role of a scientific adviser: “to help us understand that evidence, to help us consider whether the judge fully understood that evidence, and to help us evaluate the conclusions which the judge reached on that evidence”.

The two cases discussed above highlight a number of issues worth bearing in mind when dealing with cases where scientific advisers are appointed. The court appears to be fairly flexible on what an appointed scientific adviser is allowed to contribute to the case, as long as the parties are given the chance to comment on such contribution at trial. The uncertainty of what and how educational materials is presented to the judges and the inability to vet the material may induce anxiety for the litigants. Nevertheless, in some instances this may be alleviated when the Court appoints a technically qualified person from the UKIPO, as they are often seen as being more impartial than lay advisers who do not possess any prior legal training. This was the case in PCME v Goyen [1999] FSR 801 and Qualcomm v Nokia [2008] EWHC 329 (Pat).

As a further interesting note, even though scientific advisers are rarely utilised in UK patent litigation, it may be prudent for IP law practitioners to become accustomed to dealing with technical experts during litigation, as the Unified Patent Court (UPC) rules provides for a technical judge to be included in the panel upon the request of a party or a panel.